Hershey Company, The et al v. Tincturebelle, LLC et al

Filing 26

CONSENT ORDER re: 25 Settlement Agreement filed by Hershey Chocolate & Confectionery Corporation, Hershey Company, The, by Judge Wiley Y. Daniel on 9/24/2014. (evana, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 14-cv-01564-WYD-WJW
THE HERSHEY COMPANY and
HERSHEY CHOCOLATE & CONFECTIONERY CORPORATION,
Plaintiffs,
v.
TINCTUREBELLE, LLC,
TINCTUREBELLE MARIJUANKA LLC and
CHARMIN MAYES,
Defendants.

CONSENT ORDER

WHEREAS, Hershey Chocolate & Confectionery Corporation is the owner and
The Hershey Company is the licensee of various marks associated with the REESE’S®
brand for candy and confectionery products, including, without limitation, the marks
REESE’S®, REESE’S MILK CHOCOLATE PEANUT BUTTER CUPS®, REESE’S®
PEANUT BUTTER CUPS, REESE’S PUFFS®, and a variety of other marks and trade
dresses used in connection with such products (together, the “REESE’S Marks”),
including, without limitation, the marks set forth in United States Trademark Registration
Nos. 925,609; 1,215,096; 2,256,226; 2,491,191; 3,601,728; 3,631,320; 4,148,621;
4,330,229; and 4,432,557 (copies of the registration certificates for the foregoing
registrations are attached as Exhibit A-1);
WHEREAS, The Hershey Company is the exclusive licensee in the United States
of various marks owned by Huhtamaki Finance B.V. that are associated with the

HEATH® brand for candy and confectionery products, including, without limitation, the
mark HEATH® as set forth in United States Trademark Registration Nos. 1,404,302 and
3,840,907 and a variety of other marks and trade dresses used in connection with such
products (together, the “HEATH Marks”) (copies of the registration certificates for the
foregoing registrations are attached as Exhibit A-2);
WHEREAS, The Hershey Company is the exclusive licensee in the United States
of various marks owned by Kraft Foods Ireland Intellectual Property Limited and
Cadbury Ireland Limited that are associated with the ALMOND JOY® brand for candy
and confectionery products, including, without limitation, the mark ALMOND JOY® as
set forth in United States Trademark Registration Nos. 443,802 and 4,125,366 and a
variety of other marks and trade dresses used in connection with such products
(together, the “ALMOND JOY Marks”) (copies of the registration certificates for the
foregoing registrations are attached as Exhibit A-3);
WHEREAS, The Hershey Company is the exclusive licensee in the United States
of various marks owned by Kraft Foods Ireland Intellectual Property Limited that are
associated with the YORK® brand for candy and confectionery products, including,
without limitation, the mark YORK® as set forth in United States Trademark Registration
Nos. 564,557 and 1,644,557 and a variety of other marks and trade dresses used in
connection with such products (together, the “YORK Marks”) (copies of the registration
certificates for the foregoing registrations are attached as Exhibit A-4);
WHEREAS, Hershey Chocolate & Confectionery Corporation is the owner and/or
The Hershey Company is the licensee of a number of other trademarks and trade
dresses for candy and confectionery products sold by The Hershey Company in the

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United States, including without limitation the marks set forth on Exhibit A-5 and the
trade dresses used by Hershey in connection with those marks (together, the “Other
Hershey Marks” and, collectively with the REESE’S Marks, the HEATH Marks, the
ALMOND JOY Marks and the YORK Marks, the “Hershey Marks”);
WHEREAS, Hershey Chocolate & Confectionery Corporation and The Hershey
Company

(together,

“Hershey”)

accused

defendants

TinctureBelle,

LLC

and

TinctureBelle Marijuanka LLC (together, the “TinctureBelle Companies”) of advertising,
distributing and selling in the United States various candy or confectionery products
containing cannabis or tetrahydrocannabinol (the “Original Accused TinctureBelle
Products,” examples of which are depicted in Exhibit B hereto) using names and/or
trade dresses that infringe and dilute the REESE’S Marks, the HEATH Marks, the
ALMOND JOY Marks and the YORK Marks;
WHEREAS, on June 3, 2014, Hershey commenced this action against the
TinctureBelle Companies alleging claims for, inter alia, trademark infringement,
trademark dilution, false designation of origin, unfair competition and violation of the
Colorado Consumer Protection statute (C.R.S. § 6-1-101 et seq.), all in relation to the
Original Accused TinctureBelle Products, which Hershey contended infringed and
diluted its REESE’S Marks, the HEATH Marks, the ALMOND JOY Marks and the YORK
Marks;
WHEREAS, simultaneously with the submission of this Consent Order to the
Court, Hershey has filed a First Amended Complaint in this action adding as parties the
above-named individual defendant (collectively with the TinctureBelle Companies,
“TinctureBelle”), who is an officer of both of the TinctureBelle Companies;

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WHEREAS, TinctureBelle has informed Hershey that certain of the Original
Accused TinctureBelle Products are no longer being sold in the form depicted in
Hershey’s complaint in the Litigation, and has provided Hershey with examples of
products with revised names and/or packaging;
WHEREAS, Hershey continues to object to certain of the revised versions of the
Accused TinctureBelle Products depicted in Exhibit C (the “New Accused TinctureBelle
Products” and, together with the Original Accused TinctureBelle Products, the “Accused
TinctureBelle Products”);
WHEREAS, TinctureBelle denies the claims asserted against it and denies that
its conduct alleged in the Litigation violates Hershey’s rights; and
WHEREAS, Hershey and TinctureBelle have agreed to entry of this Consent
Order;
IT IS ORDERED, ADJUDGED AND DECREED THAT:
1.

This Court has personal jurisdiction over Hershey and TinctureBelle and

has subject matter jurisdiction of this action.
2.

TinctureBelle represents that:
a.

as of no later than December 30, 2013, TinctureBelle has ended all
distribution, advertising, sale and other use anywhere in the world
of:
i.

the

Accused

packaging or other variations thereof, and

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TinctureBelle

Products,

and

any

ii.

any names, marks, package designs or trade dresses

that are confusingly similar to, imitative of or an attempted satire of, any Hershey
Marks; and
b.

at no time has it used, in any products, whether as ingredients or
components or in any other manner whatsoever, any products
manufactured or distributed by Hershey.

3.

Within three days after entry of this order, to the extent that it has not

already done so pursuant to the parties’ agreement effective as of September 22, 2014
(the “Settlement Agreement”), TinctureBelle will provide to its distributors, customers,
resellers and retailers of its Accused TinctureBelle Products a copy of a recall notice
substantially in the form depicted in Exhibit D, which shall advise those parties to
(i) cease further sale of the Accused TinctureBelle Products; (ii) destroy any unsold
inventory of the Accused TinctureBelle Products; and (iii) remove any advertising or
marketing materials, including webpages, that reference the Accused TinctureBelle
products or packaging.
4.

TinctureBelle shall refrain in the future from:
a.

using, in any media and any channels of advertising, distribution or
sale anywhere in the world, including without limitation product
labeling, product packaging, print advertising, in-store displays,
domain names, keywords, metatags, online names and handles,
hashtags, social media identities, social media posts, and internet
advertising:

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i.
HASHEATH,

the terms or marks HASHEES, GANJA JOY,

HASHEATS,

THINGAMAJIGGY

and

REEFER’S,

and

any

Marks,

the

substantially similar or confusingly similar variations thereof;
ii.

the

REESE’S

Marks,

the

HEATH

ALMOND JOY Marks, the YORK Marks and the Other Hershey Marks, and any
substantially similar or confusingly similar variations thereof;
iii.

the product packaging and trade dresses shown in

Exhibit B, and any substantially similar or confusingly similar variations thereof;
iv.

any product packaging and trade dress that is

substantially similar or confusingly similar to the packaging and trade dress for
Hershey’s REESE’S, HEATH, ALMOND JOY and YORK branded products;
v.

any names, marks, package designs or trade dresses

that are confusingly similar to, imitative of or an attempted satire of, any Hershey
Marks;
vi.

the mark or term REEFER, in connection with any

candy, confectionery or other edible products containing peanut butter or
characterized by a peanut butter flavor; and
vii.

any design or trade dress that bears a partially or

predominantly orange background or that uses any combination of orange,
yellow and brown elements, in connection with any candy, confectionery or other
edible products containing peanut butter or characterized by a peanut butter
flavor;

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b.

using, in any products manufactured, repackaged, advertised,
distributed or sold TinctureBelle, whether as ingredients or
components or in any other manner whatsoever, any products
manufactured or distributed by Hershey;

c.

making any statements in any media or channels whatsoever
claiming

or

suggesting

that

any

products

manufactured,

repackaged, advertised, distributed or sold TinctureBelle are in any
way approved by, sponsored by, authorized by or otherwise
affiliated or associated with Hershey; and
d.

making any false or disparaging statements about Hershey or its
products

(and

will

remove

and

disable

the

webpage

at

http://www.wherevent.com/detail/Audrey-Hatfield-TincturebelleLegal-Defense-Fundraiser and any other materials in its custody or
control that disparage Hershey or cast it in a negative light).
5.

TinctureBelle represents that as of the date of this Consent Order, to the

best of its ability, it has removed and deleted from the Internet and all social media and
other electronic channels all advertising, posts, messages and similar communications
in the custody or control of TinctureBelle, the dissemination of which by TinctureBelle
would violate Paragraph 4 hereof.
6.

TinctureBelle shall refrain both now and in the future from registering,

applying to register or maintaining the registration, anywhere in the world, of any design,
trade dress, trademark, domain name, online name or handle, or social media identity,
the use of which by TinctureBelle is prohibited by Paragraph 4 hereof.

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7.

Hershey reserves the right to object to future packaging, advertising and

marketing materials of TinctureBelle that Hershey believes violate its intellectual
property or other rights.
8.

Within one week after execution of this Consent Order, TinctureBelle shall:
a.

provide to Hershey, through counsel in Colorado, two physical
specimens (including contents and packaging) of (i) each product
depicted in Exhibit B; (ii) each product depicted in Exhibit C; and
(iii) each other product, the sale by TinctureBelle of which would
violate Paragraph 4 hereof, to the extent any such specimens
remain in existence; and

b.

destroy all remaining specimens of each product, including without
limitation cartons, containers, packaging, wrappers, labels, displays
and any other materials, in the custody or control of TinctureBelle
or Charmin Mayes, the sale by TinctureBelle of which would violate
Paragraph 4 hereof.

9.

TinctureBelle represents that neither the TinctureBelle Companies nor

Charmin Mayes:
a.

have licensed to third parties or assigned to any other person or
entity any design, trade dress or trademark described in Paragraph
4 hereof; or

b.

owns any applications or registrations anywhere in the world for
any design, trade dress or trademark described in Paragraph 4
hereof.

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10.

TinctureBelle hereby acknowledges the validity of Hershey’s rights in the

Hershey Marks as described herein and as depicted in the Exhibits hereto, and shall not
seek to cancel or otherwise challenge the validity or enforceability of Hershey’s rights
therein or assist any others in doing so.
11.

Prior to the execution of this Consent Order, TinctureBelle has provided to

Hershey, through counsel, a written statement of sales by the TinctureBelle Companies
and by Charmin Mayes of the Accused TinctureBelle Products.

TinctureBelle

represents and warrants that the written statement it has provided to Hershey
constitutes a complete and accurate accounting of all sales by the TinctureBelle
Companies and by Charmin Mayes of any Accused TinctureBelle Products and any
products using substantially similar packaging.
12.

TinctureBelle expressly recognizes and acknowledges that a violation or

breach by it of any of the representations, covenants, conditions, agreements, or
undertakings in this Agreement will cause Hershey irreparable harm which cannot be
adequately calculated or remedied solely in money damages in an action at law,
thereby entitling Hershey to seek (in addition to any other remedy to which it may be
entitled at law) immediate injunctive relief or other equitable remedies.
13.

TinctureBelle shall comply with the terms of the Settlement Agreement.

14.

Pursuant to Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a), within

thirty days after service upon TinctureBelle of this Consent Order, TinctureBelle shall
serve upon Hershey, a report in writing under oath setting forth in detail the manner and
form in which TinctureBelle has complied with this Consent Order.

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15.

In the event that a court of competent jurisdiction finds that TinctureBelle

has engaged in a breach or violation of this Consent order, Hershey shall be entitled (in
addition to any other remedy to which it may be entitled at law) to its reasonable
attorneys’ fees incurred in enforcing its rights under this Consent Order. In addition, in
the event that a court of competent jurisdiction finds that TinctureBelle has engaged in a
breach or violation of Paragraph 1, 2, 3, 4, 5 or 13 of this Consent Order, because the
actual damages sustained by Hershey as a result of such breach would be
impracticable or extremely difficult to calculate, Hershey shall be entitled (in addition to
any other remedy to which it may be entitled at law) to liquidated damages in the
amount of $25,000 per breach (which amount is expressly agreed to represent a fair
estimate of the damage that will accrue as a result of each such breach, to the extent
such breach is compensable in money, and not a penalty) or such actual damages or
profits that Hershey establishes, whichever is greater.
16.

This Court shall retain continuing jurisdiction over the persons and entities

identified in this Consent Order and over the subject matter of plaintiffs’ Complaint to
ensure compliance and performance with the terms of this Consent Order and to modify
the Consent Order as justice so requires.
17.

The provisions of this Consent Order shall apply worldwide.

Dated: September 24, 2014.
BY THE COURT:

/s/ Wiley Y. Daniel
.
Wiley Y. Daniel
Senior United States District Judge

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The undersigned parties, by their duly authorized attorneys, hereby consent to the entry
of this Consent Order:
By: /s/ Carl F. Manthei
Carl F. Manthei
OLLILA LAW GROUP, LLC
2569 Park Lane, Suite 202
Boulder, CO 80026
Telephone: [phone]
[e-mail]

By: /s/ Eric B. Liebman
Eric B. Liebman
MOYE WHITE LLP
16 Market Square, 6th Floor
1400 16th Street
Denver, CO 80202-1486
Telephone: [phone]
[e-mail]

Paul C. Llewellyn
Kyle D. Gooch
KAYE SCHOLER LLP
425 Park Avenue
New York, New York 10022
Telephone: [phone]
[e-mail]
[e-mail]

Attorneys for Defendants
TinctureBelle, LLC, TinctureBelle
Marijuanka LLC and Charmin
Mayes

Attorneys for Plaintiffs The Hershey
Company and Hershey Chocolate &
Confectionery Corporation

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